Network-1 Technologies, Inc. v. Google, Inc. et al

Filing 202

ORDER granting 201 Letter Motion for Discovery. Google will provide Network-1 with the updated financial data referenced in this letter by August 5, 2022. Network-1 will provide Google with any supplemental expert reports by August 26, 2022. G oogle will provide Network-1 with any supplemental rebuttal expert reports by September 16, 2022. Network-1 will file any supplemental briefing not to exceed 10 pages double-spaced regarding Google's pending motion for summary judgment by September 23, 2022. Google will file any responsive supplemental briefing not to exceed 10 pages double-spaced by September 30, 2022. SO ORDERED.. (Signed by Judge Paul G. Gardephe on 7/11/2022) (ks)

Case 1:14-cv-09558-PGG-SN
Document
202Network-1
Filed 07/11/22
1 financial
of 4
Memo Endorsement: Google
will provide
with the Page
updated
data
referenced in this letter by August 5, 2022. Network-1 will provide Google with any
supplemental expert reports by August 26, 2022. Google will provide Network-1 with
any supplemental rebuttal expert reports by September 16, 2022. Network-1 will file
any supplemental briefing – not to exceed 10 pages double-spaced – regarding
Google’s pending motion for summary judgment by September 23, 2022. Google
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will file any responsive supplemental briefing – not to exceed 10 pages double-spaced
– by September 30, 2022.

12424
Wilshire Boulevard

SO ORDERED.

12th Floor
Los Angeles
California

_______________________
Paul G. Gardephe
United States District Judge
Dated: July 11, 2022

90025
Tel [phone]
Fax [phone]
www.raklaw.com

Re:

Network-1 Technologies, Inc. v. Google LLC, et al., Nos. 1:14-cv-2396PGG-SN & 1:14-cv-9558-PGG-SN

Dear Judge Gardephe:
Pursuant to the Court’s Memorandum Order (Case No. 2396, Dkt. # 264),
Plaintiff Network-1 Technologies, Inc. (“Network-1”) and Defendants Google LLC and
YouTube, LLC (collectively “Google”) respectfully submit this joint letter setting forth
their respective positions as to whether the stipulated supplemental discovery authorized
by Judge Netburn’s May 7, 2021 Order, including any supplemental expert reports, has
any impact on the parties’ pending cross-motions for summary judgment.
Plaintiff’s Position
Judge Netburn’s Order, issued pursuant to stipulation of the parties after a hearing
with the Court, authorized certain discovery after the close of the fact discovery period.
The Parties completed that fact discovery consistent with the stipulated Order. The Order
also provided that the parties reserved the right to seek leave to serve supplemental expert
reports in light of the additional discovery. The parties have discussed the issue of
additional expert reports and have agreed that service of such additional reports is
appropriate (without prejudice to Network-1’s positions referenced in paragraph 11 of
Judge Netburn’s Order).
In discussion of the service of supplemental expert reports, Network-1 has
requested that Google also provide supplemental sales/revenue information for time
periods after the close of fact discovery that are implicated by the claims at issue. This
will allow any supplemental expert reports to also include this material, rather than
requiring unnecessary serial rounds of expert supplementation. Google has agreed to
provide such information, but has not yet done so, and has not provided a specific time by
which it will provide such information. Once that information is provided, Network-1
believes that the parties can promptly complete any expert report supplementation.
Network-1 anticipates that the supplemental expert reports, which have not yet
been completed, will implicate one issue in connection with Google’s motion for

Case 1:14-cv-09558-PGG-SN Document 202 Filed 07/11/22 Page 2 of 4

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Hon. Paul G. Gardephe
July 7, 2022
Page 2

summary judgment (Case No. 2396, Dkt. # 223; Case No. 9558, Dkt. # 158). Network-1
anticipates that this issue will be addressed in a supplemental report from its expert,
Professor Mitzenmacher, and that the issues relevant to the summary judgment motion
can be presented in a brief supplemental submission and accompanying declaration.
Network-1 does not anticipate that any of the pending supplemental expert materials will
impact Network-1’s pending motion for summary judgment regarding invalidity
defenses. Google suggests that the parties previously agreed that the supplemental
discovery would not impact the summary judgment motions, but points to submissions
before the discovery was actually taken. In the discovery itself, Network-1 learned of
adjustments to the technical operation of Google’s ContentID system which Google had
not disclosed prior to the supplemental discovery authorized by Judge Netburn. That
information contradicted factual assertions made by Google in its summary judgment
motion, and confirmed factual assertions made by Network-1 in opposing that motion.
Network-1 should be permitted to present that material to the Court.1
Accordingly, Network-1 respectfully requests that the Court order Google to
provide its updated sales/revenue information by not later than July 21. Network-1
proposes that it will provide its supplemental expert report(s) within 21 days after receipt
of that material, and that Google may provide any supplemental rebuttal reports within 21
days thereafter. Network-1 will then submit any supplemental material regarding
Google’s pending summary judgment motion within 7 days after completion of those
reports and Google may provide any response within 7 days thereafter. While Google is
correct that the parties agreed to work cooperatively to arrive at such a schedule,
Network-1 has been seeking to get Google’s supplemental financial information for
nearly a year without success, suggesting that assistance from the Court is now needed.
Google’s Position
The stipulated supplemental discovery authorized by Judge Netburn involves
issues in the case that are not the subject of either party’s motion for summary judgment,
and the supplemental discovery therefore has no impact on those pending motions. As
Google stated in a letter to the Court dated April 7, 2021, “[t]he new evidence does not
affect the pending summary judgment motions.” See 1:14-cv-2396, Dkt. 249, at 3-4.
Network-1 confirmed the same to Judge Netburn at a hearing on April 22, 2021: “You
had also asked about the effect on the summary judgment briefing that’s currently
outstanding with the Court. It’s Network-1’s view that this evidence does not affect that
briefing.” See 1:14-cv-2396, Dkt. 253, at 7:12-15.
Google denies that it has ever infringed any claim of Network-1’s patents.
Google also has explained that even if Network-1’s patents were valid and infringed (and
they are neither), the patents have relatively little value, because it would have been
simple to design around them by moving relevant functionality outside the United States.
In January 2021, Google did just that, removing any argument regarding ongoing
infringement and demonstrating the relative ease and minimal cost of designing around
1

Google inserts a number of arguments about the merits that are neither correct, nor germaine to this submission.
Network-1 will not address them here, but reiterates its request that the Court conduct an oral hearing on the parties’
cross-motions for summary judgment.

Case 1:14-cv-09558-PGG-SN Document 202 Filed 07/11/22 Page 3 of 4

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Hon. Paul G. Gardephe
July 7, 2022
Page 3

the patents. See 1:14-cv-2396, Dkt. 249, at 3-4. The parties then engaged in targeted
supplemental discovery relating to the relocation.
Neither the supplemental discovery nor the relocation of portions of Google’s
accused system is relevant to the pending motions for summary judgment. Network-1’s
summary judgment motion is limited to issues involving patent invalidity. Google’s
motion likewise addresses patent invalidity, as well as certain bases on which Google’s
systems do not infringe Network-1’s patents. Critically, the non-infringement issues in
Google’s motion involve the alleged infringement of Google’s systems prior to their
relocation abroad in 2021.
Until the parties filed this joint letter, they agreed that the relocation-related
supplemental discovery would not affect the pending motions for summary judgment. As
noted above, both Google and Network-1 informed the Court in April 2021 that (in
Network-1’s words) “this evidence does not affect” the summary judgment briefing. In
granting the supplemental discovery, the Court likewise assumed it would not affect the
parties’ summary judgment motions: “Whether or not this evidence would affect the
pending motions for summary judgement, nobody has suggested that so I’m assuming
that that is true that it does not affect those motions.” See 1:14-cv-2396, Dkt. 253, at
6:2-5. And the parties’ agreement is consistent with the terms of the Court-ordered
stipulation regarding supplemental discovery, in which Network-1 reserved the right to
file “motions in limine and/or Daubert motions” but never sought a right to file any
supplemental summary-judgment submission. See 1:14-cv-2396, Dkt. 256, at ¶ 11.
Because the supplemental discovery has no impact on the parties’ summary
judgment motions, Google respectfully requests that the Court deny Network-1’s request
for leave to supplement its summary judgment papers.
Although the Court did not solicit the parties’ input on the other issues raised in
Network-1’s portion of this joint letter, Google offers the following brief response. There
is no need for the Court to order a schedule for supplemental expert discovery at this
time. Judge Netburn ordered the parties to “work cooperatively in an attempt to reach a
mutually agreeable expert discovery schedule.” See 1:14-cv-2396, Dkt. 256, at ¶ 10.
Google is confident the parties can agree on a schedule that is workable for all parties and
experts. The Court likewise need not address the issue of updated financial data. As
Network-1 acknowledges, Google has already agreed to provide such data to Network-1.
Google will do so as soon as possible, and in all events no later than August 5, 2022.

Case 1:14-cv-09558-PGG-SN Document 202 Filed 07/11/22 Page 4 of 4

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Hon. Paul G. Gardephe
July 7, 2022
Page 4

Dated: July 7, 2022
Respectfully submitted,
RUSS, AUGUST & KABAT

WILLIAMS & CONNOLLY LLP

BY: s/ Brian D. Ledahl

BY: s/ Andrew V. Trask (w/ permission)

Marc A. Fenster (pro hac vice)
Brian D. Ledahl (pro hac vice)
Adam S. Hoffman (pro hac vice)
Paul A. Kroeger (pro hac vice)
Jacob R. Buczko (pro hac vice)
Amy E. Hayden (pro hac vice)
12424 Wilshire Blvd. 12th Floor
Los Angeles, CA 90025
Phone: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

Thomas H. L. Selby (pro hac vice)
Samuel Bryant Davidoff
Andrew V. Trask
Melissa Collins (pro hac vice)
Graham W. Safty (pro hac vice)
680 Maine Ave., SW
Washington, DC 20024
Phone: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]

Charles R. Macedo
AMSTER, ROTHSTEIN &
EBENSTEIN LLP
90 Park Avenue
New York, NY 10016
Phone: [phone]
Fax: [phone]
[e-mail]
Attorneys for Network-1
Technologies, Inc.

For Matters in New York:
WILLIAMS & CONNOLLY LLP
650 Fifth Avenue, Suite 1500
New York, NY 10022
Kevin Hardy (pro hac vice)
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
1300 I Street, NW, Suite 900
Washington, DC 20005
Phone: [phone]
Fax: [phone]
[e-mail]
Attorneys for Google LLC and
YouTube, LLC